Monday, November 16, 2009

Any extra word in a claim "can and will be used against you in a court of law." Thus on the one hand, recitations in a detailed preamble may unduly limit the claim in unintended ways. By contrast, a generic preamble can never get you in trouble in that regard.

On the other hand, detailed-preamble claims can serve any number of useful purposes. The trick is to draft detailed preambles with our eyes open.

The pivotal issue is not the length of the preamble, per se, but coming to grips with what legitimate function (if any!!) is served by any particular preamble detail—be it a single word, a phrase or a whole paragraph.

It is important to note that a claim's preamble limitation can be deemed limiting when one goes to enforce the claim, even though the preamble limitation was given no patentable weight during prosecution, and thus did not help to secure the claim's allowance. Such a preamble limitation will have given up claim breadth without having received anything of benefit in return.

Consider the following claim to an automobile floor mat.

An automobile floor mat comprising

a semi-rigid monolayer having a gradually sloping edge portion extending outward from a central section, said edge portion terminating in a lip disposed at an elevation above the central portion, the lip having a plurality of indentations disposed a regular intervals around its periphery.

There is nothing in the body of this claim that requires the claimed structure to be an automobile floor mat. Thus an examiner may well regard "automobile" as being a mere statement of intended use and may reject the claim based on prior art disclosing the claimed "semi-rigid monolayer" whether or not the prior art structure was designed for use in an automobile. Or intended to be placed on a floor. Or perhaps even whether it was intended to be used as a mat.

Suppose, on the other hand, that there is no such prior art, so that the claim is allowable as presented above. Although the descriptive label "automobile" was of no help in securing allowance of this claim, it may come back to bite the patent owner when asserting the claim against suppliers of locomotive cab mats that cannot be used in automobiles (because, for example, they are too big). The patent owner will argue that the term "automobile" should be given no limiting effect because it is not necessary to give "life, meaning, and vitality" to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). That argument may or may not carry the day, depending on how the Markman judge understands what the gives-life-meaning-and-vitality test actually means and how that test applies to the invention at hand.

In any event, the Opposing Team will have a field day with this claim, hammering on the notice function that a patent's claims are supposed to serve and arguing that "if the applicant didn't intend to be limited to automobile floor mats, why did he put it in the claim?" The prosecuting attorney makes the job of the licensing/litigating attorney all the more difficult by opening the door for such an argument to even be raised.

Drafting this claim with a generic preamble, viz.,

A manufactured article comprising,

a semi-rigid monolayer…

may thus save everyone a lot of grief. Indeed, it may save the day.

Descriptive labels and modifiers, such as "automobile" and "floor" in the above example, should always be suspected as creating an infringement loophole without providing any countervailing patentability benefit. Other "usual suspects" are advantages and/or intended uses of the invention. Indeed, the reader should have little trouble in conjuring up reasonable technological embodiments in which claims having the italicized preamble language could be argued to be non-infringing even if the limitations of the body of the claim are met:

An optical system in which at least two out of phase light beams of different frequencies are combined with improved output efficiency, the system comprising…

An on-chip debug system for a programmable VLSI [very-large-scale-integration] processor, the debug system comprising…

A high speed rotor of a type applicable for use with a flywheel, the rotor comprising [no flywheel mentioned in the rest of the claim]

This is not to say that a detailed preamble is necessarily a bad thing. For example, certain intended-to-be-limiting recitations sometimes fit better in the preamble than in the body. In that situation, recitations that call out to be placed in the preamble during the course of the drafting the overall claim invariably tie into other limitations in the claim body and/or replicate them explicitly. Such preamble recitations will thus certainly give life, meaning and vitality to a claim and thus can be effectively relied upon in arguing the claim’s patentability.

Below is a claim that uses Dennis’s exemplary detailed preamble. Note how every limitation in the preamble ties into the body of the claim.

A method for content selection of digital media stored in a memory…, the method comprising,

assigning an individual portion of the digital media to a particular portion of the memory based on whether or not the content of that portion includes video data,

selecting one of the individual portions by …..

It is helpful to start out with a generic limitation, and not packing a limitation into the preamble until the structure of the evolving claim makes it clear that it is needed there. This helps protect the preamble from details that can only hurt and not help.

Copied from http://www.patentlyo.com/patent/2009/11/patent-prosecution-tips-drafting-preambles.html#more

Wednesday, September 30, 2009

You're practicing a little Google-fu to figure something out, and the top few results look like they're exactly what you're looking for. The problem: When you get to the page, they're completely outdated.

To make sure you know when a page was published before you visit the site, just add the following to the end of the URL of your search results:

&as_qdr=y15

So, for example, the following URL searches Google for "Hackintosh" and displays datestamps on every result:

http://www.google.com/search?q=hackintosh&as_qdr=y15

When you're searching for something and the date is important—you probably don't want to follow an outdated Hackintosh guide, for example—you can quickly identify newer web pages. The operator you add to the end of the URL returns web pages indexed by Google over the past 15 years, but very old items will list as January 31, 2001.

Google can reorder search and news results from the last day, week, a few months, or entire year by adding a small string to the end of the search URL. Just add this string—&as_qdr=d—to the address bar and hit enter. You'll get a custom drop-down box that lets you re-order results based on date. It's great for getting past the same top results you've already looked through, as well as grabbing only the newest links related to gadgets, software, or whatever else you're searching. Sadly it doesn't work on Google Images, but let us know in the comments if it does work on other Google searches.

Answers to Frequent Asked Questions1. Copyright (CR) protects original works of authorship including literary, dramatic, musical, and artistic works such as poetry, novels, movies, songs, computer software and architecture.2. CR does NOT protect facts, ideas, systems, or methods of operation3. CR may protect the way things are expressed.4. Copies of all works under CR protection that have been published in the U.S. are required to be deposited in the Copyright Office within three months of the date of first publication.5. Reasons to Register CRa. To have facts on public record and certificate of registration.b. Eligible for statutory damages and attorney’s fees.c. Prima facie evidence if registered w/in 5 years of publication.6. Registering CRa. Application Formb. $30 fee7. Deposita. Unpublished – one copyb. Published – two copiesc. Photographs for visual works8. Works created after January 1, 1978 are not subject to renewal.9. Architectural works became subject to CR protection on December 1, 1990.10. Only the transferee (by will, by inheritance) can register CR in a diary. CR is the right of the author of the work or the author’s heirs or assignees, not the one who owns the physical work itself.11. The creator of an original expression in a work is the author. The author is also the owner of CR unless there is a written agreement by which the author assigns the CR to another person or entity, such as a publisher. In cases of works made for hire the employer or commissioning party is considered to be the author.12. Publicationa. The distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display constitutes publication. A public performance or display of a works does not itself constitute a publication.b. Publication occurs on the date on which copies of the work are first made available to the public.c. Publication is not necessary for CR protection.d. Publication occurs at the discretion and initiative of the CR owner.13. The owner may transfer all or part of the rights in a CR work to another.14. Not copyrightable:a. Namesb. Titlesc. Slogansd. Short phrasese. Ideasf. Conceptsg. Systemsh. Methods15. Fair Use for commentary, criticism, news reporting, and scholarly reports.16. Change in own work to make a new claim of copyright:a. Substantial and creativeb. More than just editorial or minor changesc. New derivative work17. You cannot claim CR to another’s work unless you have the owner’s consent.18. CR notice is now optional.19. Royaltiesa. Private arrangement between author and publisherb. Copyright licensing organizationsc. Publications rights clearinghouses20. CR protects the original photograph, not the subject of the photo.

Copyright Duration1. Works created after January 1, 1978a. Life + 70 yearsb. Joint work – 70 years after life of last surviving authorc. Anonymous, Pseudonymous, Works for Hire i. 95 years from year of 1st publication; or ii. 120 years from year of creation; whichever expires 1st2. Created but not published before January 1, 1978a. Life + 70 yearsb. No expiration earlier than December 31, 2002c. If published before December 31, 2002, the term will not expire before December 31, 2047.3. Pre 1978 works in original or renewal term, total term extended for 95 years from date of original CR.

Architectural Works1. Prior to 1990a. Protect building itself if met conceptual separability testb. Decorative elements protectablec. Gargoyle separable from building and CRd. Buildings built before 1990 were not CRe. May protect planf. Technical drawings, pictures, graphics, artworksg. May not protect non-useful articlesh. Conceptual Separability Testi. Overall design difficult to protectj. Demetradis v. Kaufman (1988) i. May not copy blueprint ii. May copy from general measurements iii. D may not rely on infringing copies/plans2. Architectural Works CR Protection Act of 1990a. Applies to buildings created on or after December 1, 1990b. Also applies to unconstructed works as of 12/1/90 up to 12/31/02 (must be under construction by 12/31/02)c. Complies with Berne Conventiond. Standard features (windows, doors…) are not CRe. 2 Step Test – See House Report i. Original Design Elements1. Shape2. Interior Elements ii. Functional Requirements – If not functionally required, then CR3. Is a church CR?a. Post & beams are not CR – Purely functionalb. Cruciform shape of cross not CRc. Shape of Steeple?4. Is a bridge CR?a. Pedestrian walkways not CRb. Houses & office buildings CRc. Individual units inside malls are not CRd. Habitable structures, garden structures, churches, garden pavilions generally CRe. Intersections, bridges, canals, dams not CR5. Limitsa. Sect 120b. Owner of a house may modify/add features to a housec. May distribute pictures of buildings without permission

Copyright of Characters1. Characters can be Trademarked2. Nichols Testa. J. Learned Handb. Detailed Characters can be CRc. But not all chars. Can be CRd. Stock chars. Can be CRe. Can’t protect ideasf. Need Expressiong. Idea-Expression Dichotomyh. Vague, sliding scale3. 9th Circuit Sam Spade Testa. Warner Bros. V. CBSb. Is there CR outside of story in Maltese Falcon?c. Char. must be constructive of story being told; not just a chess piece in a plotd. “Story being told” Teste. Much more restrictive test – perhaps over restrictivef. Protects chars less than 2nd Circuitg. No char CR unless vehicle of story being toldh. May CR Sam Spadei. May not CR idea of any detective story being told4. Walt Disney v. Air Pirates (1978)a. Clearly more CR protectionb. Distinguish from Sam Spade Testc. Comic book characters easier to protectd. Drawn chars easier to protect5. Anderson v. Stallonea. Derivative workb. Sequel to Rocky IIIc. Are Chars independent of movie?d. CT – Passes 2nd and 9th Circuit Testse. Chars are so developed and central to story, they are central to “story being told”6. Conclusiona. Characters per se are entitled to CR protection outside of the story in which they appearb. 2 Major Tests i. Nichols Test – Specificity Test ii. Warner Test – Story Being Told Test1. Does not apply to pictured characters2. Only applies to characters in wordsc. Easier to CR cartoon char than literary characterd. KEY: Apply both tests7. James Bond MGM v. American Hondaa. CT – Character is CRb. Visually depicted characterc. Both Nichols and Warner Tests applied and satisfiedd. CR based on movie character, not literary charactere. Film, TV, cartoon chars easier to protectf. Realm of Protecting ideag. Shows broadness of protection8. King Features v. Fleischar (1924)a. Barney Google & Spark Plug – Cartoon Charsb. Protects charsc. Goes from expression to idea zone9. Detective Comics v. Burns Publications Inc (1940)a. Superman v. Wondermanb. CT – CR infringementc. Protects expressiond. Also protects idea of superheroe. Key: Protectable expressionf. Ideas can’t be CR, but judge tends to lean towards idea at times

Government Works1. Any work of U.S. Government prohibited from CR2. Fed. Gov’t employees may hold CR if created on own time3. Gov’t may own CR by assignment4. West Case – Order and arrangement CR5. Contracted work by Gov’t may be CR; depends on public interest

Authorship1. Conception – Whoever comes up with idea of work2. Execution – Whoever made work3. Financing – Whoever funded work4. Adrien v. Southern Ocean County CC (1991)a. Concept v. Executionb. Adien Conceives idea of mapc. Carolyn Haines contracted to create the workd. Issue: Is Adrien the author? Who is the author of the map?e. Concept is authorf. Haines is only tool to the expressiong. Maps CR based on 1790 Acth. Cartography is an art form, selection and arrangementi. Thin CR protection – Facts/Data

Works Made for Hire1. See H.R. 51072. EXAMa. Made by employee within scope of employment; ORb. Specifically commissioned works with numerous requirements; AND Express written Instrument (Works made for hire agreement)3. Work for hire – Original Own4. Assignment – Transfer of Work5. See Sections 201, 201(b) – Unless previously written agreement “not for hire” then generally considered “work for hire”6. CCNV v. Reid – EXAMa. Dispute over material of sculptureb. No written agreementc. Authorship – Original ownerd. Ownership – May be transferrede. Agency Law basisf. Tests i. Right to Control ii. Actual Control iii. Agency Law – SC application iv. Formal Salaried employee testg. Factors i. Control – Limited ii. Block payment iii. Ability to select own assignments iv. Used own tools/instrumentalities7. Carter v. Helmsley-Speara. Was sculpture work made for hire? Yesb. Visual Artists Rights Act (VARA) i. Authors protected from altering, defacing,… ii. But lose rights under work for hirec. Seems to deny VARAd. Factors most persuasive to CT i. Benefits ii. Taxes iii. Control of Means iv. Skill v. Additional Projects8. Aymes v. Bonellia. Swimming Pool Inventory Softwareb. TC – Work for Hirec. AC – Independent Contractor9. Avtec v. Peiffer – Independent Contractor10. Cramer v. Crestar – Work for Hire11. Fine line between Independent Contract v. Work for Hire12. Teacher Exceptiona. Exception to the Work for Hire Doctrineb. May or May not exist under the 1976 Copyright Actc. Academic writings may be teacher’s own CRd. Argument over whether exception exists13. Specially Ordered/Commissioned Works – Lulirama v. Axcess14. Work for Hire Agreementsa. Sect 101(2) – Timing i. Commissioning Timing ii. Commissioning party pays creator iii. When work createdb. Schiller – Precedes Creationc. Playboy – Meeting of the Minds; Looser requirement

Joint Works1. Sect. 101 Definition – Each joint author has an equal and undivided interest in the work either can license, but must split the revenues accordingly. Prepared by two or more authors.2. Thompson v. Larsona. No Joint Authorshipb. Stringent Test – Childress v. Taylorc. Should have written agreement to prove joint authorshipd. Percentage of authorship not discussede. Test – Co-Owner must establish i. Each joint author contributed to the work ii. Each fully intended joint authorship3. Rightsa. Right to use.b. Right to license.c. Equal and undivided interest.d. Obligation to account for profits to other author(s).4. Intention – Difficult test to meeta. If there is no written agreement, the use 2 Prong Test i. Each co-author made individual copyrightable contribution; and ii. Each co-author fully intended to be co-author.b. See Childress v. Taylor – Old but valid testc. Thompson v. Larson upholds Childressd. Not just subjectivee. Must look at overall relationship i. Billing ii. Credit iii. Decision making iv. Right to enter into Contractf. Intent is incumbent upon dominant party to prove

Copyright Transfer by Operation of Law1. Community Propertya. Is a spouse entitled to Joint Ownership in CR?b. In re Marriage of Susan and Fred Worth (1987) Cal. - Federal Copyright does not preempt State Community property lawsc. Rodrigue v. Rodrigue (1999) Louisiana – National uniformity trumps state community property laws2. Hypoa. N gives T exclusive license to translate into Italian. b. Is this valid? Noc. Writing - Note or memo required to validate transfer3. Benefits for Exclusive Licensea. Permits standing to sue for infringementb. See BMI v. CBS4. Effects Associates v. Cohena. Movie: The Stuffb. Ownership of special effects footage license issuec. Issue: Has there been a transfer of CR ownership/license?d. CT – Written note required for transfere. Right to use footage in movief. Implied license – Non Exclusiveg. Implied by conduct of partiesh. Cohen does not infringe; but is liable for breach of contracti. Keys i. Can have implied non-exclusive license ii. May not have implied exclusive license

Recordation of Transfers1. Recorded at CR Office2. Providing Notice3. Includes Sect 101 licenses and assignments4. Lends certainty and predictability to law5. Enclose Transfera. Original or sworn signed copyb. Send to CR Officec. Pay Feed. CR Office records and enterse. Sect 205(c)6. Grants priority over conflict transfers as long as property is recorded7. National Peregrine, Inc. v . Capitol Federal Savings and Loana. Must record with CR Officeb. Preempts state laws – can’t file at state level

Duration Wrap Up1. 1976 Act drops 2-term renewal process2. Picks up life + term3. Fairness to Authors4. Entry to Berne Convention5. 1998 Sonny Bono Term Extension Acta. Adds 20 Years to termb. Total 20 + 47 = 67 Years6. Works published prior to 1964 had to file renewal registration in the 28th year of CR, or else work fell into PD7. 1992 Amendment to the 1976 Acta. Automatic renewal amendmentb. January 1, 1964 – December 31, 1977c. Does not apply to pre 1964 worksd. Automatic CRe. No rights lost8. Today – Fewer ways to lose CR9. Author can assign rights in renewal term before rights vest10. Limit on author’s right to assign – must survive until renewal term to vest11. Case law – unclear about 28th year renewal term12. Automatic Renewal Provisions - Renewal vests on either of 2 datesa. When registered/filed; orb. At beginning of renewal term13. 1976 Act does not resurrect works that have fallen into PD14. 95 Yearsa. 28 Years for 1st Termb. 28 Years for Renewal Termc. 19 Years Extensiond. 20 Years Sonny Bono Term Extension Act

Duration Review1. Duration Issue Spottinga. Copyright Protectionb. Termc. Expiration2. Public Domain3. 4 Categories of worka. Pure 1909 Works – Not on EXAM i. Publication with CR Notice ii. Does not extend to 1976 Act iii. 28 year Initial Term + iv. 28 year Renewal Term – Not Automatic; must Validly renew v. 56 Years Total vi. Survival – In last year of initial term and renewal filedb. 1909 – 1976 Works i. 28 Year Initial Term + ii. 47 Year Renewal Term – Pre Sonny Bono Act iii. 75 Year Total iv. OR v. 28 Year Initial Term + vi. 67 Year Renewal (47 + 20 Sonny Bono Act) vii. 95 Year Total viii. 1992 Amendment1. Some works have automatic/voluntary renewal – 1964-772. Some works have voluntary renewal – Prior 19643. Preferable to Voluntarily Renew ix. Vesting at time of voluntary renewal – 1964-77 x. Types of works benefiting from automatic renewal – 1964-77 xi. Works published before 1964 – No Automatic Renewal xii. 1909 Act – Unclear on Survival requirement – 28 or 29 yearsc. 1976 – 1/1/1978 i. No 2 Term issues ii. No Renewal issues iii. Life + 70 Years iv. Sect 302(a) v. Wrinkles – EXAM1. Sole Author2. Joint Author3. Work for Hire vi. Joint Work – Sect 302(b) – 70 Years + Life of longest lived author vii. 302(e) – Presumption of Author’s death1. 95 years after publication date; or2. 120 years after creation dated. Created and NOT published/CR before 1/1/78 i. Sect 303 – Life of Author + 70 years ii. Ex) Lincoln’s papers found in 20011. Life + 70; but2. Sect 303 protection extends to 12/1/023. If published before 2002, CR extends to 12/1/47

Renewal for Works Made for Hire1. Employer or proprietor gets renewal rights2. Paternalistic laws don’t apply to employers3. Renewals & Derivative Works Examplea. A – Author of underlying work conveys Initial term of CR & Movie/Derivative Work to Bb. B – Creates movie and owns movie Copyrightc. C – Statutory beneficiary renews CR – either A or C can renew4. “New Estate Theory” for Renewal5. Stewart v. Abenda. Rear Window Caseb. Author granted movie right assignments to Hitchcock & Producerc. Author agrees to assign renewal rights; but dies before vestingd. Executors gain rights; assigns rights to Abende. Property of derivative works limited rights if there has been a reversion of the underlying work to author/heirsf. Creates problem with person who obtains rights to works.g. Limitations i. Subject to CR prior to 1/1/1978 ii. Written outside work for hire iii. Renewal term not effectively conveyed – ex) author dies prior to vesting term iv. Renewal claimant must file timely6. Russell v. Pricea. Public Policy Issueb. Derivative Work – Film called Pygmalionc. License granted to create film – Valid licensed. Problem: Derivative film CR falls into PD. Author licensed distribution rights to another.e. Underlying work is not yet in PDf. Only owner of underlying work can use derivative work

Termination of Transfers Protects Authors and Heirs from bad bargains Paternalistic function as in renewal1. Situationsa. Life + 70 i. Works created after 1/1/1948 ii. Sect 203 CR Actb. 1909 Act i. 1st term or renewal term of CR ii. Author validly conveyed 28 year renewal term iii. Extended renewal term – 28 + 19 = 47; Sect 304 (c) iv. Sonny Bono Act – 47 + 20 = 672. Termination under Sect 203a. Not automaticb. Must follow procedure established by statutec. Can’t waive or assign termination rightsd. Grants, Assigns, License – On or after 1/1/1978e. Key: Compliance permits term of transferf. Key: Date of transfer3. Grants Covered under Sect 203a. Applies to transfer or license of CR on or after any right under CR on or after 1/1/1978b. By Authorc. Of Any CR rightd. Does NOT Apply to i. Transfer/license in works made for hire; and ii. Dispositions made by will4. Who can Terminatea. Authorb. Joint Work – Majority of authors who execute grantc. Dead Author – Majority of statutory ownersd. If one of many authors is dead, then term interest of that author is exercised as a unity by statutory owners of term right

Ownership of Shares1. Assuming Author is Dead2. Widower with no children – Widow owns 100%3. Widow with Childrena. Widow owns 50%b. Children split remaining 50% - Per Stirpesc. Children and Grandchildren exercise Per Stirpesd. Widow must get beyond 50% to terminate grant

When Termination Takes Place1. At any time for period of 5 years starting at the end of 35 years from date of execution of grant; or2. If grant covers publication right, period starts either 35 years from publication, or 40 years from grant. See Sect 203

How to Terminate – Sect 203(a)(4)1. Serve written notice2. Between 2 – 10 years before effective term3. Must state effective date of termination4. Must comply with CR Office regulations5. Must record in CR Office before effective date of termination

Effects of Termination of Transfer1. All rights granted are terminated2. Rights revert to those owning3. Statutorily changes Pygmalion Case

Further Grants1. If author alive – Author makes further grants2. If author dead – Author’s widow or beneficiaries make further grants3. Multiple beneficiaries – Per Stirpes

Transfer of Renewal Interests1. Not for renewal rights2. To get back extended renewal term rights3. Additional 19 years of renewal term4. Given to 1909 works prior to 1976 and/or 20 years additional – Sonny Bono Act5. Not Automatic – Author and/or statutory beneficiaries must take necessary steps within statutory time limits; or transfer will continue with original grant.6. Examplea. Arnie publishes a novel in 1935; assigns rights in 1936 – “Expectancy”b. Will the renewal term vest?c. Arnie must survive until 1963 – (28+35) so renewal term vestsd. Arnie has no rights in the renewal term; given away, vested7. Sonny Bono Term Extension Acta. 1st bite - If term under Sect 304(c) then may reclaim extra 19 + 20 yearsb. 2nd bite – If no term under Sect 304(c) then may recover 20 years

Summary1. Sect 304(c)a. For CR coming into being prior to 1978, one can reclaim extended renewal period given by the 1976 Actb. Only a qualified person can terminate by giving notice 2-10 years prior to the date within the windows that generally opens at the start of 39 years – extended renewal date2. Sect 203a. On or after 1/1/78b. May be terminated by a qualified person at any time within 5 year termination window open 35 years after transaction executedc. 2-10 year notice prior to date within windowd. See Table, p. 376

Formalities1. Publication2. Notice3. Deposit4. Registration5. Formalities have decreased over the years from 1909 to the Berne Convention

What is Publication?1. Not defined in 1909 Act2. Ferris v. Fishman (1912) – Public performance of spoken drama not publication.3. La Cienega (1995)a. Sale of records of song is a publicationb. Impact – songs recorded and sold without CR no longer protectedc. Result – Congressional Amendment overruling La Cienega4. Does publication of a derivative work a publication? Probably

Limited Publication1. Limited to a small group of people2. See Church of Scientology3. Not distributed to the general public4. Does not divest under 1909 Act5. Public Affairs v. Rickovera. Issue: Was this a general publication?b. Performed speechc. Distributed to press and othersd. Holding: General Publication6. Estate of MLK v. CBSa. Publication w/o CR symbolb. Estate argues limited publicationc. Elements i. Available to Press ii. Broadcast on Radio & Television iii. Excerpts in print, newspaperd. Examples of formalities getting in the waye. District Court i. Clearly general publication ii. Wide distribution iii. Unlimited iv. MSJ à CBSf. 11th Circuit – J. Anderson, See Supplement i. Limited publication ii. Only distributed to press iii. Distinguished from Rickover case iv. Distributed to a large number of people equivalent to display in art exhibit v. Publication Test – KEY – See Supplement p. 261. Distribution to General Public; OR2. Exhibit or Display to General Public vi. J. Cook – Concurring in Part/ Dissenting in Part – Performance can’t be public vii. J. Rarely – Dissenting – District Court correctg. Seminal case on limited publicationh. CR law is paternalistic – wants to protect the family7. AMPAS v. Creative House Promo (1991)a. Limited publicationb. No divestiture of C/L protectionc. Picture published in magazines

General Public – Limited Occurrences, only 2 situations1. Tangible copies of work distributed to general public in way to exercise dominion and control over work2. Exhibit or display so as to permit unrestricted copying by general public

Registration1. Author2. Exclusive right in book3. Published or unpublished4. One deposit serves both purposes5. Form – differs depending on work6. Can’t sue for infringement until work registered7. No damages (statutory, attorney,…) prior to registration8. Fee covers administrative costs

Infringement1. Exclusive in bundle of rights2. See Sect 1063. Does not cover every type of work4. Possible to infringe more than one right5. Napstera. Secondary CR infringementb. Acts of userc. 9th Circuit – Rights infringedd. See www.mp3rockstheweb.com6. Today – Right of reproduction7. Copying – (see definition p. 417) – Perceive with machine or other device

Registration1. U.S. works have higher hurdles; must register before CR infringement suit2. No early registration option3. Remedies, penalties4. Limits amount of recovery5. Non-U.S. works – No registration for U.S. non-Berne Works

Right of Reproduction1. One of bundle of rights2. 2 Methods of Copyinga. Copiesb. Phonorecords3. Works can be copied digitally

Infringement1. 2 Step process in Arnstein v. Portera. Copyingb. Unlawful Appropriation2. Defensesa. Admits copying i. De minimus ii. Ideas are not protected iii. Parodyb. Denies copying i. P must prove copying ii. Infer D had access to work3. Unlawful appropriation – enough unlawful appropriation such that it amounts to infringement4. If works are similar – CR Issue5. If works are unsimilar – No CR Issue6. Dissection – Compare works and similarities7. Ordinary Observer Test8. Access + Similarity = Copying9. Striking Similarity – Works are so similar that only inference is one work copied from another10. Theory – Independent creation = CR11. Reality – Independent creation is difficult to prove

Unlawful Appropriation1. Only arises when CR proved2. Test – Ordinary Observer3. Not Permitted – Dissection or Expert Evidence4. Question: Has D taken so much from P work such that he wrongfully appropriated?

Making New Works after Assignment1. Ex) Jill is author of a CR worka. Assigns all rights to Andyb. Can she make new work based on original after assignment?2. Gross v. Seligmana. Finds infringementb. Copy of original work3. Franklin Mint v. National Wildlife - If original work found elsewhere, may not be infringement.4. Copying from public domain is okay5. Copying from the CR original is infringement

Phonorecords1. Covers CD’s, albums, DAT’s – See definition2. Song with lyrics may have 2 different CR’sa. Sound Recording may be CRb. Lyrics may be CR3. Compulsory licensing for phonorecords4. Synchronization license – Negotiated5. Compulsory license – Set fee, permission granted without negotiations

Sect 114 Copying of Sound Recording1. Can’t rerecord original recording2. May make recording of own creation3. Audio Home Recording Act (1992)a. 9th Circuit Napster Case – Not a home recording deviceb. DAT Concerns by industryc. Home Recording Analog & digital permittedd. Charges imposed on manufacturers and importers of DAT recorders/tapese. Consumers may only use DAT for non-commercial purposes

Visual Artists Rights Act (1990)1. A6-bis2. Covers visual rights listed in VARA3. Snapshot is not under definition4. See Sect 106(A)5. Can waive rights by signing written instrument6. Cannot transfer7. Doesn’t apply to works made for hire8. Rights of Attribution and Integrity

Right to Adapt/Prepare Derivative Work1. 106(2) – unauthorized recasting, transfer, adaptation2. Derivative markets may be more imposing than original works3. Generally applies to merchandizing characters4. Substantial similarity test – must be derivative work to perform test

Right of Distribution1. Sect 106(3) – Sale by rental, lease or lending2. Video rental without permission3. Public distribution through electronic devices4. Infringing reproduction and distribution rights5. “Transmission” term not added to 106(3)6. Judges tend to infer limitations7. Internet – Blurs bundle of rights

Right of Public Performance and Display – Sects 106(4), 106(5), 106(6)1. Does not apply to all public performances and displays2. Public Performance Issuesa. Is an act a performance?b. Has it been publicly performed?c. Is there an exemption from liability? – Sect 1103. Public Placea. Park, hotelb. Place-specific clause in Sect 106(1)4. Friends and neighbors at home – not considered a public display5. Summer camp – found to be infringing and public place6. Based on statutory exception7. Not based on profit/non-profit issue8. Narrowly worded exception9. Consider hotel room transmission/broadcast

Columbia Pictures v. Aveco1. VCR screening rooms2. Rooms rented to general public3. Public performance4. Link to General Public = Public Performance

Public Interest Exceptions – Sect 1101. In the public interest2. Know Sect 110(1-4) for EXAM3. Lists public interest exceptions

Compulsory Licenses – not on exam1. Sect 115 – Recordings on Musical works may be on exam2. Sects 111, 119, 116, 118, 114 not on exam3. Non-negotiable license 4. Must be licensed5. Statutory rate set by tribunal6. Disputes resolved by arbitration or privately otherwise7. Royalty panel abolished by Congress in 1993

Campbell v. Acuff-Rose Music, Inc.1. 2 Live Crew parody of “Pretty Woman”2. Parody – Must refer to underlying work to be parody. Directed at original work3. Parody special – Amount and Substantiality4. Must be able to recognize original work5. May be able to take more of original work than in other CR infringement cases6. “No more taken than necessary” is general CR infringement standard7. Market for or value – Parody unlikely to kill demand for original work8. Question of law worthy of Supreme Court review9. Parody is subject to the Fair Use Doctrine

Fair Use in Sega v. Accolade1. Review all factors2. Copying for commercial purposes is damaging to Fair Use Defense; but not always3. Effect on market favors Accolade – triggers more Genesis console sales4. Nature of CR favors Accolade – weak CR protection for part RE’ed5. Certain public interesta. Development of more independent gamesb. No presumption of fairness in commercial use6. Purposea. Independent creative expressionb. Opening market to new competitorsc. Does not destroy Sega’s market7. Games are different8. No monopoly granted on the market9. Functional and creative10. Hard to determinea. Protected Expressionb. Unprotected Idea11. Rejects clean room option12. Recognizes Disassembly/Fair Use Defense

Sony v. Connectix1. Connectix making Sony games playable on PC’s2. Transformation of game console3. Similar CT analysis on parts 1&4 of FU in Sony v. Sega